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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Patent

Date & Time
  • event Date

    Monday, April 14, 2025

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will guide patent counsel in drafting U.S.-origin patent applications to maximize prosecution opportunities in both the U.S. and Europe. After discussing each area, the panel will offer best practices for U.S. patent application drafters to protect inventions in Europe without sacrificing U.S. strategy.

Faculty

Rebecca M. McNeill
Partner
MCNEILL, PLLC

Ms. McNeill offers intellectual property strategy and advises on new application preparation, patent prosecution (U.S. and foreign), and preparation and negotiation of IP transactions, and provides the full scope of counseling services. She has a special interest in counseling clients on patent application filing and developing worldwide prosecution strategies in concert with clients’ business goals. She has managed and directed the U.S. and international patent portfolios for U.S. clients and has overseen the U.S. patent portfolio for international clients in Europe and Asia.

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Jens Viktor Nørgaard
Partner, Head of Biotechnology & Plant Sciences
HØIBERG

Mr. Nørgaard counsels on all areas of life science and medical technology including anything from genetics and molecular biology to drugs, diagnostics, analytical equipment, medical equipment, and greentech. He counsels on IPR strategy, IPR organization and management of companies, business development, license agreements, freedom-to-operate, validity of patents, oppositions and appeals before the EPO (European Patent Office), in addition to drafting and prosecution of patent applications. He also serves as a technical judge in Norway. Since 2015 he has served as Chairman of the Board at HØIBERG.

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Description

When drafting U.S. patent applications, counsel's initial focus is generally to position it for success in the USPTO. Many patent holders also want international patent protection and failing to consider other legal standards can prove detrimental to achieving that end. This program will compare and contrast specific USPTO and EPO legal standards.

Differences between the U.S. and European systems include standards for priority, amendments, obviousness, enablement, and written description. As a result, any misunderstanding of these differences when drafting the U.S.-origin application can negatively impact prosecution opportunities in Europe.

Patent counsel's planning for European patent requirements during the USPTO process in anticipation of global protection will reduce costs and can overcome many obstacles presented by Europe's different approach to granting patent protection.

Listen as our authoritative panel of U.S. and European patent counsel discusses the principal considerations for drafting U.S. patent applications to maximize prosecution opportunities in Europe and examines essential differences between the USPTO and EPO approaches. The panel will offer best practices for U.S. patent application drafters to protect inventions in Europe without sacrificing U.S. strategy--and vice versa.

Outline

  1. The EPO takes a literal approach to read all documents
  2. Drafting applications with an eye to potential future amendments
  3. Priority
  4. Novelty
  5. Inventive step
  6. Enablement
  7. Methods of treatment and diagnostic uses
  8. The EPC and the Unitary Patent

Benefits

The panel will review these and other high priority issues:

  • What are the considerations for patent counsel drafting U.S. applications when global patent protection is anticipated or desired?
  • What are the significant differences between the U.S. and European approaches to patent applications?
  • What steps should counsel take when drafting U.S. patent applications to maximize protection in Europe?